Ex Parte Gould

Patent Trial and Appeal Board

Jan 14, 2013

10326561 (P.T.A.B. Jan. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/326,561 12/20/2002 Geoffrey A. Gould P15391 3379
67861 7590 01/14/2013
COOL PATENT, P.C.
c/o CPA Global
P.O. BOX 52050
MINNEAPOLIS, MN 55402
EXAMINER
ZAMAN, FAISAL M
ART UNIT PAPER NUMBER
2111
MAIL DATE DELIVERY MODE
01/14/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEOFFREY A. GOULD
____________

Appeal 2010-007977
Application 10/326,561
Technology Center 2100
____________

Before DENISE M. POTHIER, TRENTON A. WARD,
and DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20 and 22-26, which constitute all the claims pending in this
application. See Br. 5.1 Claim 21 is cancelled. See id. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this opinion, we refer to the Appeal Brief filed July 13, 2009,
and the Examiner’s Answer mailed February 16, 2010.
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STATEMENT OF THE CASE
Appellant’s invention relates to interrupting or halting an operation at
a non-volatile memory device. See Spec. 8:20–9:9. Claim 1, which is
illustrative of the invention, reads as follows:
1. A portable communication device
comprising:
a processor;
a transceiver coupled to the processor; and
a non-volatile memory device coupled to the
processor, wherein the non-volatile memory device is
adapted to monitor signals from the processor to
determine on its own when a first operation of the
non-volatile memory device should be interrupted to
perform a second operation.

THE REJECTIONS
The Examiner relies on the following prior art in rejecting the claims:
Höptner U.S. 4,845,667 July 4, 1989
Ghori U.S. 5,428,760 June 27, 1995
Brown U.S. 5,940,861 Aug. 17, 1999
Heng U.S. 6,842,839 B2 Jan. 11, 2005
(filed Aug. 28, 2002)
Claims 16-19 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Höptner. See Ans. 3-4.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Höptner and Brown. See Ans. 5.
Claims 1-15 and 22-26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Heng and Ghori. See Ans. 6-8.
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Claims 1-9 were rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite. Final Rej. 2 (mailed Dec. 19, 2007). However, the
Examiner has withdrawn this rejection. See Ans. 2. Therefore this rejection
will not be further addressed.

ISSUES
The Examiner finds that Höptner discloses each limitation of
independent claim 16. See Ans. 3-4. Appellant contends that Höptner does
not disclose that a “slave device may determine for itself if an operation
currently being performed should be interrupted or halted.” Br. 13
(emphasis in original). Instead, Appellant argues, Höptner’s master
processor determines if an operation of the slave processor should be
interrupted. See Br. 14. The issue is whether Höptner discloses that a “slave
device may determine for itself if an operation currently being performed
should be interrupted or halted.”
Claim 20 depends on claim 16. Appellant argues that neither Höptner
nor Brown teaches “that [a] slave device may determine for itself if an
operation currently being performed should be interrupted or halted,” as
recited in claim 16. Br. 16 (emphasis Appellant’s). The issue is whether
Höptner in combination with Brown teaches or suggests that a “slave device
may determine for itself if an operation currently being performed should be
interrupted or halted.” See Br. 16.
Regarding independent claims 1 and 22, the Examiner finds that Heng
discloses a processor, a transceiver coupled to the processor, and a
non-volatile memory device coupled to the processor. See Ans. 6.
However, the Examiner concedes that Heng does not disclose wherein the
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non-volatile memory device is adapted to monitor signals from the processor
to determine on its own, without receiving an external interrupt signal, when
a first operation of the non-volatile memory device should be interrupted to
perform a second operation. See id. The Examiner finds that Ghori teaches
this limitation and concludes that a person of ordinary skill in the art would
have combined Ghori’s teaching and Heng’s teaching “for the purpose of
being able to suspend operations in case a process with higher priority
occurs.” Ans. 6-7.
Appellant contends that Ghori does not teach that the non-volatile
memory device “determines for itself if an operation should be halted.”
Br. 18 (emphasis in original). Appellant argues that Ghori describes a
master device determining whether a first operation should be halted and a
slave device (the non-volatile memory) that “merely monitor[s] if the master
has sent an interrupt to the slave after the master has made the
determination.” Br. 19. The issue is whether Heng and Ghori teach or
suggest “wherein the non-volatile memory device is adapted to monitor
signals from the processor to determine on its own when a first operation of
the non-volatile memory device should be interrupted to perform a second
operation,” as recited in claim 1, and “wherein the non-volatile memory
device is adapted to monitor signals from a processor and determine on its
own, without receiving an external interrupt signal, if the non-volatile
memory device should suspend a current operation to perform another
operation requested by the processor,” as recited in claim 22.

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ANALYSIS
REJECTION OF CLAIMS 16-19 UNDER 35 U.S.C. § 102(b)
Höptner discloses a “slave processor 12” that receives an interrupt
signal from a “master processor 10.” Höptner, col. 3, ll. 30-43. Upon
receipt of the interrupt signal (through intermediate logic elements, such as
latch 11), the slave processor 12, which has been executing a “slave
program,” stops that program and switches to execution of a special data
exchange program for exchange of data with the master processor 10.
Höptner, col. 3, ll. 43-65; see also id. at col. 3, ll. 5-12. The Examiner finds
that Höptner discloses the slave processor 12 monitoring signals from the
master processor 10 so that the slave processor may determine for itself if
the operation currently being performed should be interrupted or halted. See
Ans. 3-4.
Appellant contends that Höptner does not disclose a slave processor
“determin[ing] for itself” if the operation currently being performed should
be interrupted or halted. Br. 13-14. Rather, Appellant contends, Höptner
discloses the “opposite,” in that the master processor 10, not the slave
processor 12, makes the determination. Br. 14 (citing Höptner, col. 3,
ll. 8-12 (“The slave processor is controlled via its interrupt input, i.e. upon
demand of the master processor, the slave processor interrupts whatever
program it was running and transmits or receives the data demanded.”)).
According to Appellant, the Examiner improperly conflates “monitoring”
and “determining,” and from that incorrectly finds that “merely monitoring
for an interrupt message indicating the decision of the master” is the claimed
“determin[ing] on its own.” Br. 15.
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The Examiner responds by interpreting “monitor[ed] signals” in claim
16 to include an interrupt signal and finds that “if the slave microprocessor
12 recognizes that the ‘monitor[ed] signal’ is an interrupt signal, it will then
‘determine for itself if an operation currently being performed should be
interrupted or halted’, as claimed.” Ans. 9.
Appellant’s position requires us to construe “determine” to be more
limited than simply decide based on the value of an interrupt signal. See
Br. 15 (“In Hoptner, the master processor makes the decision and demands
that the slave processor acts on that decision; however Hoptner’s slave
processor does not ‘determine on its own’ the decision.”). In contrast, the
Examiner’s position requires us to construe “determine” broadly to include
deciding based on the value of an interrupt signal. See Ans. 9 (“Contrary to
Appellant’s argument, Hoptner states in Column 3, lines 43-46, that ‘[t]he
slave microprocessor 12, which meanwhile has been executing its slave
program . . . stops its work in progress upon receipt at step 31 of the
interrupt signal.’” (emphasis Examiner’s)).
“During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification . . . .” In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal quotation marks
omitted) (citations omitted). “Determine” simply means “[t]o establish or
ascertain definitely, as after consideration, investigation, or calculation.”
WEBSTER’S II NEW RIVERSIDE UNIVERSITY DICTIONARY 369 (1994).
Appellant does not cite anything in the Specification that supports a more
limiting construction of “determine.”
On the contrary, Appellant’s Specification describes the claimed
“determin[ation]” broadly. In one example, the Specification explains that a
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non-volatile memory device may have a “block busy” detector to determine
if an address provided by a processor refers to a block of the memory
involved in a current operation and, if so, generate a signal indicating that
the address provided by the processor would interfere with that operation.
Spec. 9:11-19. The “block busy” signal can be compared with other signals,
such as chip enable, output enable, and write enable signals “to determine if
the current operation should be suspended.” Spec. 9:20–10:1. The
Specification explains that “[t]his determination may be accomplished by
combinatorial logic whose output is intended to indicate when the current
operation occurring, or one that may be about to occur, should be interrupted
to allow another operation to be performed.” Spec. 10:1-4. However, the
Specification does not explain what that “combinatorial logic” is or how it
operates. For example, the Specification does not explain how (or even if)
the combinatorial logic determines whether the current operation is of higher
or lower priority than the new operation requested by the processor. In other
words, the Specification does not preclude “combinatorial logic” that simply
receives an interrupt signal and outputs a signal that indicates that the
current operation should be interrupted without making any decision as to
which operation should be given priority. See Spec. 10:1-4.
Moreover, the Specification makes clear that “determin[ing]” is even
broader than this example, repeatedly stating that the signals that can be
monitored in making the determination are not limited. For instance, the
Specification states that “the scope of the present invention is not limited
[to] the type, number, source, or nature of the signals that are monitored to
determine if an operation that is currently being performed, or that is
scheduled/queued up to be performed, should be interrupted, suspended, or
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stopped altogether.” Spec. 8:8-12 (emphasis added). Rather, the
Specification explains, “[i]t should be understood that in alternative
embodiments non-volatile memory device 45 may monitor any combination
of signals available within portable communication device 50 to determine
when an operation should be interrupted or halted.” Spec. 9:4-7 (emphasis
added). “Determine,” then, is reasonably construed, in light of the
description in the Specification, to include making a decision based only on
the value of an interrupt signal.
Under the broadest reasonable interpretation of “determine,” we agree
with the Examiner’s finding that Höptner discloses a slave device that “may
determine for itself if an operation currently being performed should be
interrupted or halted,” Ans. 3-4 (citing Höptner, col. 3, ll. 43-46). Höptner
discloses that the slave processor 12 monitors an interrupt signal from the
master processor 10 and determines based on that signal whether to interrupt
an operation it is currently performing. See Ans. 3-4, 9 (citing Höptner, col.
3, ll. 43-46 (slave processor 12 “stops its work in progress upon receipt at
step 31 of the interrupt signal.”)). Since the slave processor 10 makes the
decision to interrupt the operation based on the value of the interrupt signal,
it is making the determination “on its own.” See Ans. 9.
We also disagree with Appellant’s contentions that the Examiner
improperly conflates monitoring and determining, see Br. 15-16. Instead,
the Examiner finds that Höptner discloses monitoring an interrupt signal
and, separately from the monitoring, determining on its own, from that
signal, whether to interrupt a current operation as recited in claim 16. See
Ans. 3-4. Thus, we are not persuaded by Appellant’s arguments that “the
Examiner’s interpretation that the slave component determines for itself
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‘after’ monitoring (i.e., receiving) [improperly] . . . adds limitations to the
claims that are not recited in the claims,” and that the Examiner is reading
claim 16 to “require that the recitation of ‘may determine for itself’ [be]
necessarily dependent on the ‘monitoring’ recitation,” Br. 15.
Accordingly, we sustain the Examiner’s rejection of: (1) claim 16; and
(2) claims 17-19, which depend on claim 16.

REJECTION OF CLAIM 20 UNDER 35 U.S.C. § 103(a)
Claim 20 depends on independent claim 16 and further recites
“monitoring address signals from the master device with the slave device.”
The Examiner concedes that Höptner does not disclose “monitoring address
signals from [a] master device with [a] slave device,” as recited in claim 20,
but finds that Brown teaches this limitation. See Ans. 5. Appellant argues
that neither Höptner nor Brown teaches “that [a] slave device may determine
for itself if an operation currently being performed should be interrupted or
halted,” as recited in claim 16. Br. 16 (emphasis Appellant’s). Here,
Appellant again contends that “the Examiner is improperly equating the act
of monitoring with the act of determining for itself.” Id. As explained
above, under the broadest reasonable interpretation of “determine,” Höptner
teaches that a slave device may determine for itself if an operation currently
being performed should be interrupted or halted. See Höptner, col. 3, ll. 43-
46.
Appellant also argues that, because Höptner and Brown do not
disclose all of the elements recited in claim 20, the Examiner’s rejection fails
the Supreme Court’s “Teaching, Suggestion, Motivation [TSM] test.” Br.
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17. Because we agree with the Examiner that Höptner and Brown teach or
suggest all of the elements of claim 20, we reject this argument.
Accordingly, we sustain the rejection of claim 20.

REJECTION OF CLAIMS 1-15 AND 22-26 UNDER 35 U.S.C. § 103(a)
The Examiner finds that Ghori teaches a memory device
(microcontroller 32, which contains a memory) adapted to monitor signals
from a processor (master microprocessor 34) and determine on its own,
without receiving an external interrupt signal, when a first operation of the
memory device should be interrupted to perform a second operation. See
Ans. 6 (citing Ghori, Fig. 2; col. 3, ll. 21-32). Appellant contends that Ghori
does not teach that the microcontroller 32 “determines for itself if an
operation should be halted.” Br. 18 (emphasis Appellant’s). Instead,
Appellant argues, “the slave device is merely monitoring if the master has
sent an interrupt to the slave after the master has made the determination.”
Br. 19. Thus, according to Appellant, “Ghori teaches that [the] slave
processor acts in response to a decision by the master processor.” Id.
As with his argument for claim 16, Appellant’s argument here
depends on a construction of “determine” that excludes simply interpreting
an interrupt signal. For the reasons given above for claim 16, we decline to
construe “determine” so narrowly. Instead, the broadest reasonable
interpretation of “determine” includes making a decision based on the value
of an interrupt signal. Therefore, we reject Appellant’s arguments here for
the same reasons given above in rejecting Appellant’s arguments regarding
claim 16.
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Appellant also argues that, because Heng and Ghori do not disclose all
of the elements recited in claims 1 and 22, the Examiner’s rejection fails the
Supreme Court’s “Teaching, Suggestion, Motivation test.” Br. 19-20.
Because we agree with the Examiner that Heng and Ghori teach or suggest
all of the elements of claims 1 and 22, we reject this argument.
Accordingly, we sustain the Examiner’s rejection of (1) claims 1 and
22; (2) claims 2-9, which depend on claim 1; (3) claims 23-26, which
depend on claim 22; and (4) claims 10-15 not argued separately.

ORDER
The decision of the Examiner to reject claims 1-20 and 22-26 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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